Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 28
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`YMAX CORPORATION,
`Petitioner
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`v.
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`FOCAL IP, LLC,
`Patent Owner
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`_____________
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`Case IPR2016-01260
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`Patent Number: 8,457,113
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`_____________
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`PETITIONER’S EVIDENTIARY OBJECTIONS
`UNDER 37 C.F.R. § 42.64(b)
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`1
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`Patent 8,457,113
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`Paper No. 28
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`YMAX CORPORATION,
`Petitioner
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`v.
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`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Case IPR2016-01260
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`Patent Number: 8,457,113
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`_____________
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`
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`PETITIONER’S EVIDENTIARY OBJECTIONS
`UNDER 37 C.F.R. § 42.64(b)
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`{41380528;1}
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 28
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner YMAX CORPORATION
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`hereby objects as follows to the admissibility of Patent Owner’s evidence:
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`1. Ex. 2020 (La Porta Dep.):
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`a. Petitioner objects to this evidence under FRE 801 and FRE 802 as
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`hearsay having no applicable exception:
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`i. FRE 32 states that "all or part of a deposition may be used
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`against a party" only if all of (A)-(C) are satisfied. FRE 32(A)
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`requires that "the party was present or represented at the taking
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`of the deposition or had reasonable notice of it." This Exhibit is
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`a deposition taken in a completely different IPR. Petitioner was
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`not "present or represented at the taking of the deposition," nor
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`did the Patent Owner provide Petitioner "reasonable notice of
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`it."
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`ii. FRE 804 states that former testimony may only be "offered
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`against a party who had — or, in a civil case, whose
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`predecessor in interest had — an opportunity and similar
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`motive to develop it by direct, cross-, or redirect examination."
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`Petitioner (and Petitioner's predecessor in interest) never had
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`Case IPR2016-01260
`Patent 8,457,113
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`"an opportunity and similar motive to develop [this former
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`testimony] by direct, cross-, or redirect examination."
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`b. Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is a deposition taken in a completely
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`different IPR. Petitioner was never given the opportunity to cross-
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`examine the Expert in this Exhibit.
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`c. Petitioner further objects to this evidence as being an incomplete copy
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`of the deposition. Under FRE 32(A)(6), Petitioner "require[s]" the
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`Patent Owner to file a full and complete copy of the deposition.
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`2. Ex. 2021 (Willis Dep.):
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`a. Petitioner objects to this evidence under FRE 801 and FRE 802 as
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`hearsay having no applicable exception:
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`i. FRE 32 states that "all or part of a deposition may be used
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`against a party" only if all of (A)-(C) are satisfied. FRE 32(A)
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`requires that "the party was present or represented at the taking
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`of the deposition or had reasonable notice of it." This Exhibit is
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`a deposition taken in a completely different IPR. Petitioner was
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`not "present or represented at the taking of the deposition," nor
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`Paper No. 28
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`Case IPR2016-01260
`Patent 8,457,113
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`did the Patent Owner provide Petitioner "reasonable notice of
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`it."
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`ii. FRE 804 states that former testimony may only be "offered
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`against a party who had — or, in a civil case, whose
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`predecessor in interest had — an opportunity and similar
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`motive to develop it by direct, cross-, or redirect examination."
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`Petitioner (and Petitioner's predecessor in interest) never had
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`"an opportunity and similar motive to develop [this former
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`testimony] by direct, cross-, or redirect examination."
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`b. Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is a deposition taken in a completely
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`different IPR. Petitioner was never given the opportunity to cross-
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`examine the Expert in this Exhibit.
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`c. Petitioner further objects to this evidence as being an incomplete copy
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`of the deposition. Under FRE 32(A)(6), Petitioner "require[s]" the
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`Patent Owner to file a full and complete copy of the deposition.
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`3. Ex. 2023 (-01261 Pet.):
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 28
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`a. Petitioner objects to this evidence under FRE 401 as irrelevant. This
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`Exhibit is a Petition from a third party in another IPR. Thus, it is the
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`legal argument and opinion of a party that is completely unrelated to
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`the Petitioner. Petitioner was not involved in the drafting or filing of
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`the Petition included in this Exhibit. As such, this Exhibit does not
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`have any "tendency to make a fact more or less probable than it would
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`be without the evidence."
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`b. To the extent this Exhibit is determined to have some relevancy,
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`Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is the argument and unsworn opinion of a
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`party that is completely unrelated to the Petitioner. Petitioner was not
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`involved in the drafting or filing of the Petition included in this
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`Exhibit. As such, allowing it to be used against the Petitioner would
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`result in unfair prejudice to the Petitioner, and this unfair prejudice
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`would substantially outweigh any potential minor probative value the
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`Exhibit may provide.
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`4. Ex. 2024 (-01254 Pet.):
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 28
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`a. Petitioner objects to this evidence under FRE 401 as irrelevant. This
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`Exhibit is a Petition from a third party in another IPR. Thus, it is the
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`legal argument and opinion of a party that is completely unrelated to
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`the Petitioner. Petitioner was not involved in the drafting or filing of
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`the Petition included in this Exhibit. As such, this Exhibit does not
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`have any "tendency to make a fact more or less probable than it would
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`be without the evidence."
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`b. To the extent this Exhibit is determined to have some relevancy,
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`Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is the argument and unsworn opinion of a
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`party that is completely unrelated to the Petitioner. Petitioner was not
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`involved in the drafting or filing of the Petition included in this
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`Exhibit. As such, allowing it to be used against the Petitioner would
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`result in unfair prejudice to the Petitioner, and this unfair prejudice
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`would substantially outweigh any potential minor probative value the
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`Exhibit may provide.
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`5. Ex. 2025 (-01260 Pet.):
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 28
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`a. Petitioner objects to this evidence under 37 C.F.R. § 42.6(d), which
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`states that "[a] document already in the record of the proceeding must
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`not be filed again, not even as an exhibit or an appendix, without
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`express Board authorization." This Exhibit is a copy of portions of
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`Petitioner's Petition, which is already in the record (see Paper 1), and
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`Patent Owner never received express Board authorization to re-file
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`these portions of the Petition. The filing of this Exhibit confuses the
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`record, as Petitioner is unsure as to which document to cite to in future
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`papers: the Paper number of the original petition or Patent Owner's
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`Exhibit number.
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`6. Ex. 2026 (La Porta Dec. of IPR2016-01262)
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`a. Petitioner objects to this evidence under FRE 801 and FRE 802 as
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`hearsay. This Exhibit is a third party's expert's declaration submitted
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`by a third party in a different IPR. The expert is not involved in any
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`way in this IPR. Also, Petitioner was never given the opportunity to
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`cross-examine this expert.
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`b. Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is an incomplete version of the Expert's
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`Case IPR2016-01260
`Patent 8,457,113
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`declaration. The Patent Owner has cherry picked portions of the
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`declaration that may benefit the Patent Owner, while leaving out
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`portions of the declaration that may be unfavorable to the Patent
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`Owner. The Patent Owner's failure to submit a full version of the
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`Expert Declaration causes this Exhibit's "probative value [to be]
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`substantially outweighed by a danger of" "unfair prejudice."
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`7. Ex. 2027 (Willis Dec. of IPR2016-01254):
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`a. Petitioner objects to this evidence under FRE 801 and FRE 802 as
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`hearsay. This Exhibit is a third party's expert's declaration submitted
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`by a third party in a different IPR. The expert is not involved in any
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`way in this IPR. Also, Petitioner was never given the opportunity to
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`cross-examine this expert.
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`b. Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is an incomplete version of the Expert's
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`declaration. The Patent Owner has cherry picked portions of the
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`declaration that may benefit the Patent Owner, while leaving out
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`portions of the declaration that may be unfavorable to the Patent
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`Owner. The Patent Owner's failure to submit a full version of the
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`Case IPR2016-01260
`Patent 8,457,113
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`Expert Declaration causes this Exhibit's "probative value [to be]
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`substantially outweighed by a danger of" "unfair prejudice."
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`8. Ex. 2028 (Lavian Dec. of IPR2016-01258):
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`a. Petitioner objects to this evidence under FRE 403, as "its probative
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`value is substantially outweighed by a danger of" "unfair prejudice."
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`This Exhibit is an incomplete version of the Expert's declaration. The
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`Patent Owner has cherry picked portions of the declaration that may
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`benefit the Patent Owner, while leaving out portions of the declaration
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`that may be unfavorable to the Patent Owner. The Patent Owner's
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`failure to submit a full version of the Expert Declaration causes this
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`Exhibit's "probative value [to be] substantially outweighed by a
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`danger of" "unfair prejudice."
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`9. Ex. 2030 (Lavian Dec. of IPR2016-01256):
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`a. Petitioner objects to this evidence under FRE 403, as "its probative
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`value is substantially outweighed by a danger of" "unfair prejudice."
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`This Exhibit is an incomplete version of the Expert's declaration. The
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`Patent Owner has cherry picked portions of the declaration that may
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`benefit the Patent Owner, while leaving out portions of the declaration
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`that may be unfavorable to the Patent Owner. The Patent Owner's
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`Paper No. 28
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`Patent 8,457,113
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`failure to submit a full version of the Expert Declaration causes this
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`Exhibit's "probative value [to be] substantially outweighed by a
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`danger of" "unfair prejudice."
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`10. Ex. 2047 (O'Neal)
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`a. Petitioner objects to this evidence under 37 C.F.R. § 42.6(d), which
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`states that "[a] document already in the record of the proceeding must
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`not be filed again, not even as an exhibit or an appendix, without
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`express Board authorization." The reference included in this Exhibit
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`is already in the record, and Patent Owner never received express
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`Board authorization to re-file this reference. The filing of this Exhibit
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`confuses the record, as Petitioner is unsure as to which Exhibit
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`number to cite to in future papers: Petitioner's Exhibit number or
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`Patent Owner's Exhibit number.
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`11. Ex. 2049 (Chang):
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`a. Petitioner objects to this evidence under 37 C.F.R. § 42.6(d), which
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`states that "[a] document already in the record of the proceeding must
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`not be filed again, not even as an exhibit or an appendix, without
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`express Board authorization." The reference included in this Exhibit
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`is already in the record, and Patent Owner never received express
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`Paper No. 28
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`Case IPR2016-01260
`Patent 8,457,113
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`Board authorization to re-file this reference. The filing of this Exhibit
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`confuses the record, as Petitioner is unsure as to which Exhibit
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`number to cite to in future papers: Petitioner's Exhibit number or
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`Patent Owner's Exhibit number.
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`12. Ex. 2052 (Shtivelman):
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`a. Petitioner objects to this evidence under 37 C.F.R. § 42.6(d), which
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`states that "[a] document already in the record of the proceeding must
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`not be filed again, not even as an exhibit or an appendix, without
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`express Board authorization." The reference included in this Exhibit
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`is already in the record, and Patent Owner never received express
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`Board authorization to re-file this reference. The filing of this Exhibit
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`confuses the record, as Petitioner is unsure as to which Exhibit
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`number to cite to in future papers: Petitioner's Exhibit number or
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`Patent Owner's Exhibit number.
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`13. Ex. 2057 ($200 Billion Broadband Scandal, Bruce Kushnick, 2006)
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`a. Petitioner objects to this evidence under FRE 401 as irrelevant. This
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`Exhibit is a book having a date of 2006. Patent Owner is arguing that
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`its patent is entitled to a priority date of May 4, 2000. The book in
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`Case IPR2016-01260
`Patent 8,457,113
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`this Exhibit is 6 years after that date. As such, it is irrelevant to the
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`state of the art at the time of the alleged invention.
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`14. Ex. 2064 (Excerpts of Declaration of Thomas La Porta in Support of Petition
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`for Inter Partes Review of U.S. Patent No. 8,457,113, June 23, 2016,
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`submitted in support of IPR2016-01261):
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`a. Petitioner objects to this evidence under FRE 801 and FRE 802 as
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`hearsay. This Exhibit is a third party's expert's declaration submitted
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`by a third party in a different IPR. The expert is not involved in any
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`way in this IPR. Also, Petitioner was never given the opportunity to
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`cross-examine this expert.
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`b. Petitioner further objects to this evidence under FRE 403, as "its
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`probative value is substantially outweighed by a danger of" "unfair
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`prejudice." This Exhibit is an incomplete version of the Expert's
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`declaration. The Patent Owner has cherry picked portions of the
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`declaration that may benefit the Patent Owner, while leaving out
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`portions of the declaration that may be unfavorable to the Patent
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`Owner. The Patent Owner's failure to submit a full version of the
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`Expert Declaration causes this Exhibit's "probative value [to be]
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`substantially outweighed by a danger of" "unfair prejudice."
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 28
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`15. Ex. 2065 (Excerpts of Declaration of Dr. Tal Lavian in Support of Petition
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`for Inter Partes Review of U.S. Patent No. 7,764,777, June 23, 2016,
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`submitted in support of IPR2016-01258):
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`a. Petitioner objects to this evidence under FRE 403, as "its probative
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`value is substantially outweighed by a danger of" "unfair prejudice."
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`This Exhibit is an incomplete version of the Expert's declaration. The
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`Patent Owner has cherry picked portions of the declaration that may
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`benefit the Patent Owner, while leaving out portions of the declaration
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`that may be unfavorable to the Patent Owner. The Patent Owner's
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`failure to submit a full version of the Expert Declaration causes this
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`Exhibit's "probative value [to be] substantially outweighed by a
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`danger of" "unfair prejudice."
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`Paper No. 28
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`/s/ Mark D. Passler
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
`AKERMAN LLP
`777 South Flagler Drive
`Suite 1100 West Tower
`West Palm Beach, FL 33401.
`Tel: (561) 653-5000
`Fax: (561) 659-6313
`mark.passler@akerman.com
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`Case IPR2016-01260
`Patent 8,457,113
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`Dated: April 10, 2017
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`Paper No. 28
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`Case IPR2016-01260
`Patent 8,457,113
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on April 10, 2017, the foregoing
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`Evidentiary Objections was served by electronic mail addressed to the Patent
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`Owner's counsel of record in this IPR:
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`(1) Brent N. Bumgardner (at brent@nelbum.com);
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`(2) John Murphy (at murphy@nelbum.com);
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`(3) Victor Siber (at VSiber@SiberLaw.com);
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`(4) Hanna Madbak (at HMadbak@SiberLaw.com); and
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`(5) PAL-IPR@nelbum.com.
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`/s/ Mark D. Passler
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
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`AKERMAN LLP
`777 South Flagler Drive
`Suite 1100 West Tower
`West Palm Beach, FL 33401.
`Tel: (561) 653-5000
`Fax: (561) 659-6313
`mark.passler@akerman.com
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`Dated: April 10, 2017
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